Ex Parte Cohen

Patent Trial and Appeal Board

Oct 31, 2016

13117464 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/117,464 05/27/2011
7590 11/01/2016
John G. Posa
Gifford, Krass, Sprinkle, Anderson & Citkowski, PC
2701 Troy Center Dirve, Suite 330
Post Office Box 7021
Troy, MI 48007-7021
Richard Cohen
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
ECV-10704/29 7664
EXAMINER
NEGRON, ISMAEL
ART UNIT PAPER NUMBER
2875
MAILDATE DELIVERY MODE
11/01/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD COHEN
Appeal2015-004854
Application 13/117,464
Technology Center 2800
Before PETER F. KRATZ, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1, 2, 6, and 7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of the appeal relates to gazing globes and other
ornamental objects including light sources and light-activated materials.
Spec. ,-r 2.
1 Appellant identifies the real party in interest as RSR Industries, Inc.
Appeal Brief filed March 24, 2014 ("App. Br."), 1.
2 Final Office Action mailed September 24, 2013 ("Final Act.").
Appeal2015-004854
Application 13/117,464
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A lighting apparatus, comprising:
a hollow object having an interior and an opening into the
interior;
a base unit coupled to the opening of the hollow object, the
base unit defining a housing with a surface facing into the
interior of the hollow object;
the surface of the base unit having a central region including
a single light-emitting diode (LED) extending outwardly from
the central region to illuminate the object from the inside out;
the surface of the base unit further including at least two
solar panels facing into the interior of the object, including one
solar panel disposed on one side of the LED, and another solar
panel disposed on the other side of the LED; and
wherein the housing of the base unit includes at least one
battery charged by the solar panel to power the LED.
REJECTIONS ON APPEAL
1. Claims 2 and 7 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite;3 and
3 The Final Action that is the subject of this appeal also included an
objection to the title as not descriptive. Final Act. 2. We do not consider the
objection in this appeal because the objection is a petitionable matter under
3 7 C.F .R. § 1.181 and is not within the jurisdiction of the Patent Trial and
Appeal Board. See 37 C.F.R. § 1.181.
The Final Action also includes an obviousness-type double patenting
rejection. Final Act. 6. As Appellant points out, a terminal disclaimer was
filed November 25, 2013, and March 24, 2014, disclaiming the term of any
U.S. Patent granted on the subject Application extending beyond the
expiration date of the full statutory term of U.S. Patent No. 7,784,956, as
more fully set forth in the Terminal Disclaimer. The PTO's electronic
Application file records indicate that the terminal disclaimer was approved
and entered. Accordingly, we consider this rejection as having been
withdrawn by the Examiner notwithstanding the Examiner's failure to list
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Appeal2015-004854
Application 13/117,464
2. Claims 1, 2, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
obvious over Liao (US 6,517,217 Bl issued February 11, 2003)
(hereinafter "Liao").
DISCUSSION
Indefiniteness Rejection
Appellant does not contest the rejection under 35 U.S.C. § 112,
second paragraph in the record of this appeal. See App. Br. 2. Accordingly,
we summarily sustain the rejection.
Obviousness Rejection
Appellant argues the claims as a group. We select claim 1 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1.
Liao relates to lamps, specifically ornamental solar lamp assemblies
that convert radiant energy of sunlight into electric power for the battery in
the daytime, and turns on light emitting diodes (LEDs) when dark.
Liao 1 :30-36.
The Examiner finds that Liao discloses a lamp assembly (Fig. 2)
having hollow object 30 having an interior and rim 31 defining an opening
into the interior, base unit 10 coupled to the opening of hollow object 30,
base unit 10 defining a housing with a surface facing into the interior of
hollow object 30, the surface of base unit 10 including single LEDs 53, the
surface of base unit 10 further including solar panel 51 facing into the
interior of hollow object 30, where the housing of base unit 10 includes
the obviousness-type double patenting rejection under the "WITHDRAWN
REJECTIONS" subheading in the Answer. See Ans. 2.
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Appeal2015-004854
Application 13/117,464
battery 55 charged by solar panel 51 to power light-emitting diode 53 (2:41-
67; Figs. 1-2). Final Act. 7. As shown in Liao's Figure 2, LEDs 53 extend
outwardly from the central region of base unit 10 to illuminate hollow
object 30 from the inside out. The Examiner acknowledges that Liao does
not disclose an apparatus having "at least two solar panels facing into the
interior of the object, including one solar panel disposed on one side of the
LED, and another solar panel disposed on the other side of the LED," as
recited in claim 1.
The Examiner finds that one of ordinary skill in the art would have
been motivated to use a plurality instead of a single solar panel facing into
the interior of hollow object 30, at least one solar panel on each side of
LEDs 53, to provide more power, and as a result more light to the apparatus.
Final Act. 8.
Appellant raises two arguments in response to the rejection. We
address each in tum.
First, Appellant argues that the Examiner erred in finding that Liao
teaches or suggests a lamp assembly including a "base unit having a central
region including a single light-emitting diode (LED)," as recited in claim 1.
App. Br. 2-3; see also Reply Br. 1-3. As the Examiner points out, the
phrase "including a single light emitting diode (LED)" is open-ended claim
language permitting inclusion of additional unrecited elements such as a
plurality of single LEDs. Examiner's Answer mailed July 17, 2014
("Ans.") 7. In addition, Appellant's Specification makes clear that its
lighting apparatus can include a plurality of LEDs. See Spec. i-f 21
("[a]lthough a single emitter is shown [in Figure 1], clearly multiple emitters
may be used, including emitters closer to the particles 106."). As the
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Appeal2015-004854
Application 13/117,464
Examiner finds, Liao (Figure 2) discloses or reasonably suggests a lamp
assembly (Fig. 2) including single LED 53 (i.e., a plurality of single LEDs
53) extending outwardly from a central region of base unit 10. Ans. 7.
Thus, we do not find Appellant's first argument to be persuasive of
reversible error in the Examiner's rejection of claim 1.
Second, Appellant argues that the Examiner erred in finding that Liao
teaches or suggests a lighting apparatus having a base unit that includes "at
least two solar panels ... including one solar panel disposed on one side of
the LED, and another solar panel disposed on the other side of the LED," as
recited in claim 1. App. Br. 3--4; Rely Br. 3--4. As the Examiner
determines, it would have been a routine and obvious design choice to use
two solar panels, rather than just one, facing into the interior, with one solar
panel disposed on one side of the LED, and another solar panel disposed on
the other side of the LED to power brighter LEDs. See Final Act. 8; see also
Ans 8-9. Appellant does not argue that the modification would have been
beyond the level of skill and creativity in the art or would have rendered
Liao' s lamp assembly inoperable for its intended purpose. See Reply Br. 4
(where Appellant argues that using two solar panels in Liao's lamp would
"complicate the structure."). Thus, we do not find Appellant's second
argument to be persuasive of reversible error in the Examiner's rejection of
claim 1.
In view of the foregoing, we sustain the Examiner's obviousness
rejection of claims 1, 2, 6, and 7.
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Appeal2015-004854
Application 13/117,464
DECISION
For the above reasons, the rejection of claims 2 and 7 under
35 U.S.C. § 112, second paragraph, and the rejection of claims 1, 2, 6, and 7
under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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